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Wednesday, 20 April 2016

Common General Knowledge and Inconvenient Details - Accord v Medac and Unwired Planet

Two recent rulings of Mr Justice Birss of the Patents Court, England and Wales contain interesting statements on obviousness attacks based on common general knowledge alone, adding some new aspects to the findings of the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159. The problem is that what is presented as common general knowledge is necessarily a synthetic picture based on overlaps in various pieces of evidence (and the recollection of experts) where inconvenient details are inevitably (or deliberately?) left out. In Accord v. Medac, Birss J. presents the following caveat:

Obviousness over common general knowledge alone

119. I am not satisfied that the invention is obvious based on the common general knowledge alone attack relied on by Accord. That is because the relevant common general knowledge must be that in the UK (see Arnold J in Generics (UK) v Warner Lambert [2015] EWHC 2548 (Pat) at paragraphs 123-124) and in the UK the skilled clinician was unaware as a matter of common general knowledge what concentrations were being administered subcutaneously to patients and was unaware, without prompting, of any particular issue of pain arising from the subcutaneous administration. There is therefore nothing to provide an impetus to the skilled team to think about the issue at all.

120. Before leaving the argument based on common general knowledge alone, I will mention the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159 and in particular the passage at paragraph 158 which warns that such attacks need to be scrutinised with care since they can be favoured by parties because the starting point is not obviously encumbered by inconvenient details of the kind found in documentary disclosures. I respectfully agree with Floyd J. Since it seems to me that this case provides a good example of the problems identified in ratiopharm I will add a few words of my own.

121. Normally the person attacking validity will rely on a particular concrete document or well defined prior use as a starting point. The fact that such a concrete item of prior art may be part of the common general knowledge is not the point. That is different from an attack based on common general knowledge alone.

122. Many inventions involve a combination of known features. However a combination of features, all of which individually were common general knowledge, can give rise to a valid patent claim if that combination is new and non-obvious. Patent trials are inevitably ex post facto and a key problem is to identify and avoid hindsight. Combinations of features can pose a particularly acute hindsight problem. The thing about concrete items of prior art, whether they are prior published documents or prior used products or processes, is that whatever combination of features that concrete prior art consists of, is not one which was created with hindsight knowledge of the invention.

123. The problem with arguments over common general knowledge alone is that the combination of features relied on is always and necessarily one created with hindsight knowledge of the invention, and worse, is one which the person attacking validity has not been able to find as a pre-existing combination in the concrete prior art. If they had they would have relied on that concrete prior art. Either the combination has not been made in the concrete prior art at all or it only appears with additional inconvenient details. If an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct.

124. The problem is illustrated in this case. Sometimes an invention belongs to a field which is not well documented but in this case Accord did not lack possible starting points. It has pleaded two documents and could easily have pleaded others, such as the existing SmPCs for subcutaneous methotrexate. However the documents contain what might have been thought of as “inconvenient” details. Russo does not mention subcutaneous administration by name and is aimed at JCA rather than RA. Russo is also a small study and was published six years before the priority date. Jansen does mention subcutaneous and is for RA but it does not mention pain and contains the two statements referred to above which medac relies on. That the “inconvenient” details in Russo have not led to a finding of non-obviousness is not the point. To invent as a starting point in the prior art an amalgam of the best bits of the two cited documents while leaving out the inconvenient aspects, which is in effect what the argument was, created a combination which did not hitherto exist.

These wise words are re-emphasised in the most recent decision in Unwired Planet v. Huawei saga as follows:A final general point on obviousness
233. I have addressed the obviousness arguments on their merits. However in my judgment the argument based on common general knowledge alone contained a good number of the familiar flaws in arguments of this kind which were discussed by Floyd J in Ratiopharm v Napp[2008] EWHC 3070 (Pat) at paragraph 155-159 and by me in Accord v Medac [2016] EWHC 24 at paragraphs 119-124. The argument in this case had not been properly pleaded. That is not the defendants' fault because the parties agreed to treat Mr Townend's first report as a statement of the case. However the case then shifted very close to trial, which demonstrated why it should have been pleaded properly in the first place. Furthermore the argument presented a combination of common general knowledge features which had been created with hindsight knowledge of the patent. It was presented in a way which lacked inconvenient details which were found when the same ideas appeared in the committee documents and it presented points of common general knowledge at a level of generality which itself was crafted with hindsight.